!020794 PTO backs off from first-to-file harmonization
The New York Times has an interesting article on the recent PTO decision
to stick with "first-to-file" for the time being (NYT Feb 7, 1994, page D2).
Two weeks ago, the PTO announced its decision, with Commerce Secretary
Brown commenting "While other international negotiations continue, we will
maintain our first-to-invent system, while keeping open the option of full
patent harmonization in the future".
Many people were disconcerted about the way the announcement was made,
with no one, WIPO, Congress, and the patent legal community given any
notice about the decision. In particular, Senator DeConcini who chairs
the Senate subcommittee on Patents, Copyrights and Trademarks, said he was
considering holding oversight hearings on the policy decision.
In an interview, PTO Commissioner Lehman clarified the announcement.
He said he was in favor harmonization, but that it encompassed more than
just first to file. The United States' main problems lie with Japan, he
said. "The Japanese system does not give timely exclusivity while Japanese
inventors get timely exclusivity here". "That is a predicate to having
any kind of harmonization."
Also, problems with Europe are a factor. Complete protection for one
patent in Europe (even with EPO) costs $88,000 (for filing fees in each
country), while the total fee in the United States is $7500/$3750.
"You don't ask a large segment of your user community to give up
something they consider to be valuable unless you can show them that in
exchange we will get an international system that gives them tangible
and substantial benefits abroad", the Commissioner said.
More controversial is Section 104 of the US patent law, which lets
Americans receive patents based on date of invention, while restricting
foreign inventors to receiving patents based on date of filing. Because
of the recetn GATT treaty, this restriction will go away, and foreign
inventors will receive patents based on date of invention. This should
complicate interference proceedings, with foreigners being able to claim
first-to-invent and initiating international law suits. Some think this
new headache might cause small inventors to support first-to-file in the
long run.
Greg Aharonian
Internet Patent News Service